Kim Manwaring is a Phoenix neurosurgeon who invented a number of medical devices in his garage-turned-laboratory.  He was profiled in the Arizona Republic this weekend, and I thought it was a great story of the and hard work and creative mind required in starting a tech company.  Read the story here.

I received my latest bit of trademark happenings from this weekend’s Saturday Night Live Weekend Update, not a colleague’s blog. Skee-Ball, Inc., the owner of Skee-ball games filed suit against a company that runs Skee-ball tournaments under the moniker “Brewksee-Ball.” Whoops. Looks like the tourney company didn’t get a lawyer’s clearance on this one before they came up with the name. Not only is the Skee-ball mark an incredibly famous one, but it is highly distinctive trademark because it incorporates a fanciful word that has no meaning, and thus, no connection to the game on which it is applied. The obvious defense is that the Skee-ball mark has become generic, but I’m not so sure there are other manufacturers of this style of game, even though the public certainly knows the game by that particular name. I, myself, have trouble coming up with a generic name for the Skee-ball game without delving into a long patent-type description like a game including an upstream ramp and a downstream arrangement of concentric annular goals….

While I think there is otherwise a pretty clear prima facie case of infringement here, the transformative nature of the mark should add a slight wrinkle to the case.  Does the addition of “Brew” to create “Brewskee,” a slang term for a beer, push this new phrase far enough away from the trademark that is clearly different?  Of course, this may not even be brought up given that the mark has very likely become generic.

An invention must be of the appropriate subject matter to be eligible for a patent.  Appropriate subject matter includes, by statutory definition, a machine, article of manufacture, composition of matter, or process.  For most inventions, the determination regarding whether the invention is patent eligible is generally an easy one.  However, in some areas of technology, this questions becomes extremely difficult.

The Supreme Court is currently tackling a case whose core issue is the patentability of a process of applying a drug containing an active ingredient and subsequently measuring that ingredient’s levels in the patient.  Patentable subject matter is an issue the Supreme Court does not often take up, one reason simply being that it is a difficult issue.  Oral argument was yesterday, and Justice Breyer, at least, revealed some frustration around the issue (via Patently-O):

JUSTICE BREYER: Suppose I discover that if … someone takes aspirin … for a headache and, you know, I see an amazing thing: if you look at a person’s little finger, and you notice the color [indicates that] you need a little more, unless it’s a different color, you need a little less. Now, I’ve discovered a law of nature and I may have spent millions on that. And I can’t patent that law of nature, but I say: I didn’t; I said apply it. I said: Look at his little finger.

MR. SHAPIRO: Sure.

JUSTICE BREYER: Okay? Is that a good patent or isn’t it?

MR. SHAPIRO: No … Well, because you — you’ve added to a law of nature [to] just a simple observation of the man’s little finger.

I’ve already received many calls from clients about the American Invents Act.  For those who want an online reference, the USPTO has created a site that contains some very basic information about the changes it will bring.  Some of those changes, such as patent fees, went into effect yesterday.  Others will fall into place over the next 18 months.  The site does include a timeline that shows some major highlights in the coming year.

You may have heard that a patent reform bill was recently passed by Congress reforming the way our patent system runs.  If signed by the President, it will bring the largest changes to the patent system in over a hundred years.

Some of the changes:

First Inventor to File: The US currently uses a first-to-invent patent system.  That is, in the US, only the first person to invent a product can obtain a patent on it.  The rest of the world uses a first-to-file system, or more properly, a first-inventor-to-file system.  This bill brings the US in line with the rest of the world.  Now, a person who invents a product second can obtain a patent if he beats the first inventor to the patent office.  This poses some risk for independent inventors.  Large companies have divisions dedicated to patenting internal inventions.  By keeping everything in-house, they can develop an invention and file a patent on it very quickly.  In contrast, most independent inventors take time to file patent applications – they come up with an idea, think about it, develop it, look for a patent attorney, hire the patent attorney, discuss the invention with the patent attorney, and then hand over the disclosure to the patent attorney so that he can write the application and prepare it for filing.  The new law gives larger companies the upper hand.  That means inventors can’t sit on applications anymore – they will have to file quickly, or file provisional applications soon after conception of the invention.  But it doesn’t mean that someone can steal your invention and file a patent on it.  The law will require that the applicant be a true inventor, not a thief.  That is why it is called a first-inventor-to-file system.

Filing Fees: In addition to the already existing “Large” and “Small” entity statuses, the bill creates a “Micro” category, which will pay half the fees that a small entity pays, which are already half the fees that large entities pay.  This would mean, with today’s filing fees, micro entities would pay about $231 to file a non-provisional patent application.  Fees are expected to go up immediately for most inventors.  10 days after the law goes into effect, the government will charge a 15% surcharge on fees.  So if you are considering filing, file soon.

Prior Use Rights: In some situations, disclosing before filing can create some presumptive rights.  If someone accuses you of infringing their patent, and you can point to a disclosure made within one year before their patent application filing date.  But not all prior disclosures count, and some can waive your US and foreign rights.  Be careful and talk with an attorney.

Expedited Examination: If you don’t have some other basis for expediting examination, you can now request that your patent application be given priority with, essentially, a bribe.  An extra $4,800 governmental filing fee buys you into an accelerated examination track that could provide a final examination within 12 months, rather than the more typical 2-4 years.  It will have to be seen what effect this has on the backlog of non-prioritized applications.

Humans: No claims will be granted “directed to or encompassing a human organism.”  This language is bound to create a huge amount of litigation.

David Abrams and Dennis Crouch have published a comparative study on the switch from a first-to-invent system to a first-to-file system in Canada and applied the analysis to the potential change to the US patent system by the America Invents Act.  Read it here.  It posits that a reduction in patent activity by small inventors is likely.

Patently-O did a brief post yesterday on a selected group of patent applications to see how the applications have proceeded through the PTO.  Of the applications filed in February 2006, 57% have matured into a patent, 28% are abandoned, and 15% remain pending.  Five and a half years is a long time to work through the Patent Office, but it may be that a large majority of that 15% are in a cramped technology field, one in which the Patent Office has a disproportionately large backlog.

Did you love The Hangover and are you desperately waiting for The Hangover: Part II to come out in a few weeks?  Well, a tattoo artist is trying to stymie your anticipation by preventing its release!  In The Hangover: Part II, Ed Helms’ character gets a tattoo on his face nearly identical to the one Mike Tyson has, and Victor Whitmill, the man who tattooed Tyson’s face several years ago, has sued Warner Bros. for copyright infringement.

There are already some misconceptions floating around the net about who can sue, what they can sue for, and what the defenses are.  A few issues:

Is copyright even involved?

Copyright protects original works of authorship fixed in a tangible medium of expression.  Pieces of art are usually written on paper, preserved with sound recordings, or set down in film.  A tattoo applied to the skin is sufficiently permanently recorded so that it can be perceived, and as long as the tattoo contains a minimal level of creativity, it would qualify for copyright protection.  Certainly Tyson’s tribal tattoo has creativity to it.  Copyright exists.

So who owns the copyright?

Copyright ownership vests first to the author, but can be transferred by assignment.  Whitmill created the work and thus initially owned the copyright (unless it was a work made for hire), and he apparently had Tyson sign a release recognizing that ownership interest.  (Let’s question the intelligence of essentially giving (or not reserving) control of a piece of your body over to someone else.  I would love to see the release and whether it includes any exceptions for Tyson’s own display of his face tattoo.  But more on Tyson’s specific tattoo later).  Whitmill registered the copyright less than a month ago, no doubt as a precursor to this litigation.  Without the copyright registration, he wouldn’t be allowed to bring a federal lawsuit.

What rights can be asserted?

Copyright gives the owner a number of exclusive rights, but generally it allows the owner to prevent anyone from reproducing, displaying, distributing, or preparing derivative works of the original work.  It is possible here that Whitmill could have contracted away some of his rights in his agreement with Tyson.  But presumably, that deal would be between himself and Tyson and thus wouldn’t exempt conduct by third parties.  Ed Helms’ character’s tattoo implicates at least the derivative works right and more likely the reproduction right.  I can’t really see anything more than a trivial variation between the two tattoos; the tattoos bear much, much more than a substantial similarity with each other.  It would be incredibly difficult to argue that the second tattoo has any degree of originality.

Is there infringement?

The copying is so close here, it would be almost impossible to pass a straight-face test in an argument of no infringement.  Clearly, Warner Bros. knew of the Tyson tattoo (he did appear in the first film, after all), and the second tattoo is essentially a replica.  The similarities between the two tattoos are so exact that your mind instantly thinks of Mike Tyson when you see Ed Helms’ tattoo.  If the case gets to court, which it almost certainly won’t, I have no doubt that this point would simply be stipulated.

Are there any defenses to infringement?

The fair use defense is where the argument really arises.  Fair use is a defense to copyright infringement that evaluates a number of factors, namely, the purpose and character of the use, the nature of the copyrighted work, the amount of substantiality of the work used, and a few others.  Most of these factors fall on the side of Whitmill.  The work is highly creative and it has been co-opted completely by Warner Bros.  The one argument Warner may have is that the use of the tattoo is a parody.  A parody must call recognition to the original work and must make some comment on it as well.  The parody doesn’t have to be successful – even if the parody isn’t very good at making its point, it may still be considered fair.  Obviously, there can be a lot of discussion about the comments that the movie is making about the tattoo or Tyson himself.  Until the movie comes out, though, we won’t know for sure what the commentary is, but there may be a strong argument here.

Nevertheless, this case is likely to settle out.  Whitmill has a pretty decent argument, and Warner Bros probably doesn’t want the movie to come out late.  An injunction request has been filed to halt the release of the movie, but a delay of the movie isn’t likely worth the cost of a quick settlement to Warner Bros.

The Takeaway from the Hangover: Applaud the tattoo artist here for being so forward-thinking in retaining his rights in the tattoo.  I’m not sure if releases like this are common at tattoo parlors, but I think they might be after this.

Oh, and why wasn’t there a suit for the first Hangover?  I have a few suspicions.  Copyright law includes a policy known as the first-sale doctrine.  Typically, a copyright owner is given the first chance to distribute his or her work publicly.  Once that first sale is made, however, the owner of the actual work (or the thing in which the work is inherent) can distribute it as he pleases.  It could certainly be arguable that once Tyson paid for the tattoo, he owned that particularly copy and could distribute it as he please.  Thus, it is possible that Tyson didn’t need any provisions in the tattoo agreement allowing him to use or display his face around town, and he could give permission to Warner Bros to reproduce the tattoo on his face in the first movie.

A few weeks ago, I argued that the term “trademark bully” should be carefully applied and not overused.  The tendency is to inflate every act of trademark patrolling as bullying.  Of course, the term didn’t arise without reason – there are certainly examples of bullying by trademark owners where the scope of the owner’s rights simply doesn’t extend to recipient’s usage.  Those examples can be David-and-Goliath-type stories or just the reverse, as Vegas Trademark Attorney Ryan Giles notes.

The PTO recently completed a study titled “Trademark Litigation Tactics and Federal Government Services to Protect Trademarks and Prevent Counterfeiting” to determine whether trademark bullying was a real problem.  It was relatively inconclusive regarding whether small businesses are harmed by unreasonable enforcement tactics, determining that “if abusive tactics are a problem, such tactics may best be addressed by the existing safeguards in the litigation system in the U.S. and by private sector outreach, support, and education relating to these issues.”  Seattle Trademark Lawyer Michael Atkins raises some well-thought issues with those determinations and the PTO’s solutions to the problems.  Michael argues that while the solutions, which are mostly geared toward educating the private sector about trademark law, ignore market realities.  He thinks the award of attorney’s fees to prevailing parties should be more aggressive than it currently is.

I agree.  Questions of right and wrong persist in the mind of the bullied business owner only until they hear what litigation could cost.  Without a high likelihood of being reimbursed those costs – indeed, even with a high likelihood of getting paid back – the initial outlay in money and time can make warding off a bully very unattractive to a bullied business owner.  If the owner doesn’t have the cash flow to support defensive litigation, he or she may not have a choice in whether to fight or give in.

Unfortunately, trademark law has bullying built into it in a way.  Trademark owners are required to patrol for inappropriate use of their marks.  Given enough mark owners searching, inevitably, some will overreach.

Yes, the event you have been waiting for is fast approaching.  The 2011 National Trademark Expo will be held on Friday, October 14^th and Saturday, October 15^th.  The expo is designed to educate the public about trademarks, their value and importance in the global marketplace, and the electronic filing system that the PTO uses.  The Expo will also feature unusual marks and a historical perspective of the evolution of trademarks.  See century-old marks.  Compare real goods with counterfeit ones.  Ask questions about certification and sound trademarks.  Find out how many different trademarks are owned by a single company without you ever suspecting it was behind them all.  And, of course, meet T. Markey, the Expo’s mascot (no relation to Biz Markie).